Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA682398
`ESTTA Tracking number:
`07/08/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Apple Inc.
`07/08/2015
`
`1 Infinite Loop
`Cupertino, CA 95014
`UNITED STATES
`
`Attorney informa-
`tion
`
`Joseph Petersen
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 Avenue of the Americas, 21st Floor
`New York, NY 10036
`UNITED STATES
`SRoe@kilpatricktownsend.com, AlJones@ktslaw.com, JPetersen@ktslaw.com,
`agarcia@ktslaw.com, tmadmin@ktslaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86403651
`07/08/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`03/10/2015
`07/08/2015
`
`Apple Pie Repair LLC
`120 Steve St
`Lafayette, LA 70503
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 037. First Use: 2010/03/19 First Use In Commerce: 2010/03/19
`All goods and services in the class are opposed, namely: Repair of electronic devices and accessor-
`ies, not including repair of software,namely, repair of computers, laptop computers, tablets, cell
`phones, and gamingconsoles
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1078312
`
`11/29/1977
`
`Application Date
`
`03/25/1977
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 009. First use: First Use: 1976/04/00 First Use In Commerce: 1976/04/00
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`Registration Date
`
`2808567
`
`01/27/2004
`
`Application Date
`
`10/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE
`
`NONE
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`COMPUTER CONSULTATION, DESIGN, TESTING,RESEARCH AND ADVIS-
`ORY SERVICES; RESEARCH AND DEVELOPMENT OF COMPUTER HARD-
`WARE AND SOFTWARE; MAINTENANCE AND REPAIR OF COMPUTER
`SOFTWARE APPLICATIONS; UPDATING OF COMPUTER SOFTWARE;
`COMPUTER PROGRAMMING SERVICES; PROVIDING INFORMATION CON-
`CERNING COMPUTERS AND COMPUTER SOFTWARE OVER COMPUTER
`NETWORKS AND GLOBAL COMMUNICATION NETWORKS; [ COMPUTER
`SERVICES, NAMELY, HOSTING WEB SITES AND PROVIDING WEBSITE
`OPERATION AND MANAGEMENT SERVICES TO OTHERS; ] COMPUTER
`SERVICES, NAMELY, PROVIDING SEARCH ENGINES FOR OBTAINING
`DATA ON COMPUTER NETWORKS AND GLOBAL COMMUNICATION NET-
`WORKS; LEASING OF COMPUTERS, COMPUTER PERIPHERALS AND
`COMPUTER SOFTWARE
`
`U.S. Registration
`No.
`Registration Date
`
`3928818
`
`03/08/2011
`
`Word Mark
`Design Mark
`
`APPLE
`
`Application Date
`
`05/03/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1976/04/01 First Use In Commerce: 1976/04/01
`Computer hardware; computer hardware, namely, server, desktop, laptop and
`notebook computers; computer memory hardware;computer disc drives; optical
`disc drives; computer hardware, software and computer peripherals for commu-
`
`

`
`nication between multiple computers and between computers and local and
`global computer networks; computer networking hardware; set top boxes; com-
`puter hardware and computer software for the reproduction, processing and
`streaming of audio, video and multimedia content; computer hardware and soft-
`ware for controlling the operation of audio and video devices and for view-
`ing,searching and/or playing audio, video, television, movies, photographs and
`other digital images, and other multimedia content; computer monitors; liquid
`crystal displays; flat panel display monitors;computer keyboards, cables, mo-
`dems; computer mice; electronic docking stations;stands specially designed for
`holding computer hardware and portable and handheld digital electronic
`devices; batteries; rechargeable batteries; battery chargers; battery packs;
`power adapters for computers; electrical connectors, wires, cables, and ad-
`aptors; wired and wireless remote controls for computers and portable and
`handheld digital electronic devices; headphones and earphones; stereo head-
`phones; in-ear headphones; microphones;audio equipment for vehicles, namely,
`MP3 players; sound systems comprising remote controls, amplifiers, loudspeak-
`ers and components thereof; audio recorders; radio receivers; radio transmitters;
`personal digital assistants; portable digital audio and video players; electronic
`organizers; cameras; telephones; mobile phones; videophones; computer gam-
`ing machines, namely, stand-alone video gaming machines; handheld and mo-
`bile digital electronic devices for the sending and receiving of telephone calls,
`electronic mail and other digital media; MP3 and otherdigital format audio and
`video players;portable and handheld digital electronic devices for recording, or-
`ganizing, transmitting, receiving, manipulating, playing and reviewing text, data,
`image, audio and video files; a full line of electronic and mechanical parts and
`fitting for portable and handheld digital electronic devices for recording, organiz-
`ing, transmitting, receiving, manipulating, playing and reviewing text, data, im-
`age, audio and video files, namely, headphones, microphones, remote controls,
`batteries, battery chargers, devices for hands-free use, keyboards, adapters;
`parts and accessories for mobile telephones, namely, mobile telephone covers,
`mobile telephone cases, mobile telephone covers madeof cloth or textile materi-
`als, mobile telephone batteries, mobile telephone battery chargers, headsets for
`mobile telephones, devices for hands-free use of mobile telephones; carrying
`cases, sacks, and bags, all for use with computers and portable and handheld
`digital electronicdevices; operating system programs; computer utility programs
`for computer operating systems; a full line of computer software for business,
`home, education, and developer use; computer software for use in organizing,
`transmitting, receiving, manipulating, playing and reviewing text, data, image,
`audio, and video files; computer programs for personal information manage-
`ment; database management software; character recognition software; electron-
`ic mail and messaging software; telecommunications software for connecting
`wireless devices, mobile telephones, handheld digital electronic devices, com-
`puters, laptop computers, computer network users, global computer networks;
`database synchronization software; computer programs for accessing, browsing
`and searching online databases; computer software to develop other computer
`software; computer software for use as a programming interface; computer soft-
`ware for use in network server sharing; local and widearea networking software;
`computer software for matching, correction, and reproduction of color; computer
`software for use in digital video and audio editing; computer software for use in
`enhancing text and graphics; computer software for use in font justification and
`font quality; computer software for use to navigate and search a global computer
`information network; computer software for use inword processing and database
`management; word processing software incorporatingtext, spreadsheets, still
`and moving images, sounds and clip art; computer software for use in authoring,
`downloading, transmitting, receiving, editing, extracting, encoding, decoding,
`playing, storing and organizing audio, video, still images and other digital media;
`computer software for analyzing and troubleshooting other computer software;
`computer graphics software; computer search engine software; website devel-
`opment software; computer software for remote viewing, remote control, com-
`munications and software distribution within personal computer systems and
`
`

`
`across computer networks; computer programs for file maintenance and data re-
`covery; computer software for recording and organizing calendars and sched-
`ules, to-do lists, and contact information; computer software for clock and alarm
`clock functionality; computer softwareand prerecorded computer programs for
`personal information management; electronic mail and messaging software;
`computerprograms for accessing, browsing and searching online databases;
`computer software and firmware for operating system programs; blank computer
`storage media; user manuals in electronically readable, machine readable or
`computer readable form for use with, and sold as a unit with,all the aforemen-
`tioned goods; instructional manuals packaged in association with the above
`
`U.S. Registration
`No.
`Registration Date
`
`1114431
`
`03/06/1979
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`03/20/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`THE MARK CONSISTS OF A SILHOUETTE OF ANAPPLE WITH A BITE RE-
`MOVED.
`Class 009. First use: First Use: 1977/01/00 First Use In Commerce: 1977/01/00
`COMPUTERS AND COMPUTER PROGRAMS RECORDED ON PAPER AND
`TAPE
`
`U.S. Registration
`No.
`Registration Date
`
`2690881
`
`02/25/2003
`
`Word Mark
`
`NONE
`
`Application Date
`
`07/18/2002
`
`Foreign Priority
`Date
`
`02/26/2002
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 037. First use: First Use: 1982/10/25 First Use In Commerce: 1982/10/25
`computer installation services; computer maintenance services; computer repair
`services; advisory and consultancy services relating to all the aforesaid
`
`U.S. Registration
`No.
`Registration Date
`
`2715578
`
`05/13/2003
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`07/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1977/01/01 First Use In Commerce: 1977/01/01
`Computers hardware; computer hardware, namely, server, desktop, laptop,
`notebook and subnotebook computers; hand held and mobile computers; com-
`puter [ terminals and ] monitors; personal digital assistants; portable digital audio
`players; electronic organizers; computer keyboards, cables, [ modems; ] audio
`speakers; computer video control devices, namely, computer mice, [ trackballs,
`joysticks andgamepads; ] a full line of computer software for business, home,
`education, anddeveloper use; computer programs for personal information man-
`agement; database management software; [ character recognition software;
`telephony management software; ] electronic mail and messaging software; [
`telecommunications software, namely, for paging; ] database synchronization
`software; computer programs for accessing, browsing and searching online
`databases; operating system software; application development tool programs;
`blank computer storage media; fonts, typefaces, type designs and symbols re-
`corded onmagnetic media; computer software for use in providing multiple user
`access to a global computer information network for searching, retrieving, trans-
`ferring, manipulating and disseminating a wide range of information; computer
`software foruse as a programming interface; computer software for use in net-
`work server sharing; local and wide area networking software; computer soft-
`ware for matching, correction, and reproduction of color; computer software for
`use in digital videoand audio editing; computer software for use in enhancing
`text and graphics; computer software for use in font justification and font quality;
`computer software for use to navigate and search a global computer information
`network, as well as to organize and summarize the information retrieved; com-
`puter software for use in word processing and database management; word pro-
`cessing software incorporating text, spreadsheets, still and moving images,
`sounds and clip art; computer software for use in authoring, downloading, trans-
`mitting, receiving, editing, extracting, encoding, decoding, playing, storing and
`organizing audio, video, still images and other digital data; computer software for
`analyzing and troubleshooting other computer software; children'seducational
`software; computer game software; Computer graphics software; [ Computer
`search engine software; ] Web sitedevelopment software; computer program
`which provides remote viewing, remote control, communications and software
`distribution within personal computer systemsand across computer network;
`computer programs for file maintenance and data recovery; computer peripher-
`als; instructional manuals packaged in association withthe above
`
`U.S. Registration
`No.
`Registration Date
`
`2753069
`
`08/19/2003
`
`Word Mark
`
`NONE
`
`Application Date
`
`07/23/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 042. First use: First Use: 1980/09/00 First Use In Commerce: 1980/09/00
`[ Application service provider (ASP), namely, hosting computer software applica-
`tions of others; ]computer services, namely, displaying the [ web sites and ] im-
`ages of others on a computer server; computer diagnostic services; installation
`of computer software; updating of computer software; maintenance of computer
`software; computer hardware development; integration of computer systems and
`networks; monitoring the computer systems of others for technical purposes and
`providing back-up computer programs and facilities; computer consultation,
`design, and testing services; consulting services inthe field of design, selection,
`implementation and use of computer hardware andsoftware systems for others;
`computer data recovery; computer programming for others; research and devel-
`opment of computer hardware and software; website design, creation [ and host-
`ing services ] ; computer services, namely, designing [ and implementing ] web
`sites for others; computer services, namely, providing search engines for obtain-
`ing data on a global computer network; providing use of on-line non-
`downloadable software for communications via local or global communications
`networks, including the Internet, intranets, and extranets; computer consultation,
`namely, analyzing data to detect, eradicate, and prevent the occurrence of com-
`puter viruses; computer consultation, namely, services relating to the protection
`of computer hardware, computer software, computer networks and computer
`systems against computer viruses, attacks, or failures; computer consultation,
`namely, services for optimizing the performance and functionality of computer
`software and communications networks; technical support services, namely,
`troubleshooting of computers, computer software, telecommunications, and the
`Internet systems; leasing of computers, computer peripherals and computer
`software; leasing computer facilities; providing information in a wide variety of
`fields over computer networks and global communication networks; computer
`services, namely, creating indexes of information, web sites and other informa-
`tion sources available on computer networks; providing information concerning a
`wide range of text, electronic documents, databases, graphics and audiovisual
`information
`
`U.S. Registration
`No.
`
`3679056
`
`Application Date
`
`01/13/2009
`
`

`
`Registration Date
`
`09/08/2009
`
`Word Mark
`Design Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of an apple with a bite removed.
`
`Class 009. First use: First Use: 1977/01/31 First Use In Commerce: 1977/01/31
`Computers; computer hardware; computer peripherals; handheld computers;
`handheld mobile digital electronic devices for recording, organizing, transmitting,
`manipulating, and reviewing text, data, image, audio, and audiovisual files, for
`the sending and receiving of telephone calls, electronic mail, and other digital
`data, for use as a digital format audio player, handheld computer, personal digit-
`al assistant, electronic organizer, electronic notepad, camera, and global posi-
`tioning system (GPS) electronic navigation device; digital audio and video re-
`corders and players; personal digital assistants; electronic organizers; cameras;
`telephones; mobile phones; satellite navigational systems, namely, global posi-
`tioning systems (GPS); electronic navigational devices, namely, global position-
`ing satellite (GPS) based navigation receivers; computer game machines for use
`with external display screens, monitors, or televisions; a full line of accessories
`and parts for the aforementioned goods; stands, covers, cases, holsters, power
`adaptors, and wired and wireless remote controls for the aforementioned goods;
`computer memory hardware; computer disc drives; optical disc drives; computer
`networking hardware; computer monitors; flat panel display monitors; computer
`keyboards; computer cables; modems; computer mice; electronic docking sta-
`tions; set top boxes; batteries; battery chargers; electrical connectors, wires,
`cables, and adaptors; devices for hands-free use; headphones; earphones; ear
`buds; audio speakers; microphones; and headsets; a full line of computer soft-
`ware for business, home, education, and developer use; user manuals for use
`with, and sold as a unitwith, the aforementioned goods; downloadable audio and
`video files, movies, ring tones, video games, television programs, pod casts and
`audio books via the internet and wireless devices featuring music, movies,
`videos, television, celebrities, sports, news, history, science, politics, comedy,
`children's entertainment,animation, culture, current events and topics of general
`interest
`
`U.S. Registration
`
`3710912
`
`Application Date
`
`02/04/2008
`
`

`
`No.
`Registration Date
`
`11/17/2009
`
`Word Mark
`Design Mark
`
`APPLE STORE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 037. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Maintenance, installation and repair ofcomputer hardware, computer peripher-
`alsand consumer electronic devices
`Class 038. First use: First Use: 2007/06/29 First Use In Commerce: 2007/06/29
`Technical consulting in the field of consumer electronics, namely, telephones,
`cellular telephones and wireless telecommunications devices; consulting ser-
`vicesin the field of selection, implementation and use of consumer electronic
`systems for others, namely, telecommunicationssystems featuring telephones,
`cellular telephones and wireless telecommunications devices
`Class 041. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Education and training services, namely, conducting classes, workshops, and
`seminars in the field of computers, computer software, online services, informa-
`tiontechnology, internet website design, music, photography and video products
`and consumer electronics; arranging professional workshop and training
`courses; computer education training services; training in the use and operation
`of computers, computer software and consumer electronics; entertainment ser-
`vices, namely, providing a facility for live concerts andspecial events in the
`nature of live musical performances; technical consultingin the field of consumer
`electronics, namely, audio, audiovisual and home and portable entertainment
`systems and devices; consulting services in the field of selection, implementa-
`tion and use of computer hardware, computer software and consumer electronic
`systems for others, namely, audio, audiovisual and home and portable entertain-
`ment systems and devices
`Class 042. First use: First Use: 2001/05/19 First Use In Commerce: 2001/05/19
`Technical support services, namely, troubleshooting computer hardware, com-
`puterperipheral, computer software and consumer electronic devices; installa-
`tion, updating, maintenance and repair of computer software; technical consult-
`ing in thefield of computers and computer-based consumer electronics; com-
`puter and consumer electronic diagnostic services; consulting services in the
`field of selection, implementation and use of computer hardware, computer soft-
`ware and computer-based consumer electronic systems for others; computer
`data recovery; consulting services in the field of selection, implementation and
`use of computer hardware and computer software for the operation of consumer
`electronic systems for othersin the nature of audio, audiovisual andhome and
`portable entertainment systemsand devices
`
`U.S. Registration
`No.
`
`3634113
`
`Application Date
`
`06/16/2008
`
`

`
`Registration Date
`
`06/09/2009
`
`Word Mark
`Design Mark
`
`APPLECARE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 037. First use: First Use: 1982/10/25 First Use In Commerce: 1982/10/25
`Maintenance, repair, updating and installation services for computer hardware,
`computer peripherals, computer networks and consumer electronic devices;
`consulting services in the field of physical maintenance of computer hardware,
`computerperipherals, computer networks and consumer electronic devices
`
`U.S. Registration
`No.
`Registration Date
`
`3717431
`
`12/01/2009
`
`Word Mark
`Design Mark
`
`APPLECARE
`
`Application Date
`
`06/16/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1982/10/25 First Use In Commerce: 1982/10/25
`Technical support services, namely, troubleshooting of problems relating to
`computer hardware, computer peripherals, consumer electronic devices and
`computer software; providing technical support andtroubleshooting information
`via the Internet, voice telecommunications networksand on-site for fixing prob-
`lems relating to computer hardware, computer peripherals, computer software
`and consumer electronic devices; computer consultation, namely, services for
`optimizing the performance and functionality of computer hardware, computer
`peripherals, consumer electronic devices, computer software andcomputer net-
`works
`
`U.S. Registration
`No.
`Registration Date
`
`3894316
`
`12/21/2010
`
`Application Date
`
`06/16/2008
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`APPLECARE
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 036. First use: First Use: 1992/12/31 First Use In Commerce: 1992/12/31
`Insurance and warranty services, namely, underwriting warranty and extended
`warranty contracts relating to the maintenance, repair, installation and updating
`of computer hardware, computer peripherals, computer networks and consumer
`electronic devices; Insurance and warranty services, namely, underwriting war-
`ranty andextended warranty contracts relating tothe maintenance, installation
`and updating of computer software; providing extended warranties on computer
`hardware, computer peripherals, computer networks, consumer electronic
`devices and computer software
`
`77172511#TMSN.png( bytes )
`73162799#TMSN.png( bytes )
`76432531#TMSN.png( bytes )
`76426501#TMSN.png( bytes )
`78146716#TMSN.png( bytes )
`77648705#TMSN.png( bytes )
`77388365#TMSN.png( bytes )
`77499829#TMSN.png( bytes )
`77499847#TMSN.png( bytes )
`77499807#TMSN.png( bytes )
`2015-07-08 Notice of Opposition.pdf(183786 bytes )
`Exhibit 1 - NOO - APPLE PIE REPAIR, LLC.PDF(2474030 bytes )
`Exhibit 2 - NOO - APPLE PIE REPAIR, LLC.PDF(859848 bytes )
`Exhibit 3 - NOO - APPLE PIE REPAIR, LLC.PDF(374413 bytes )
`Exhibit 4 - NOO - APPLE PIE REPAIR, LLC.PDF(1770960 bytes )
`Exhibit 5 - NOO - APPLE PIE REPAIR, LLC.PDF(1008734 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Joseph Petersen/
`Joseph Petersen
`07/08/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/403,651
`For the mark: APPLE PIE REPAIR
`Filed: September 23, 2014
`Published: March 10, 2015
`-----------------------------------------------------------X
`APPLE INC.,
`
`
`
`
`
`Opposer,
`
`
` v.
`
`NOTICE OF OPPOSITION
`
`
`
`:
`: Opposition No.
`:
`
`:
`
`:
`:
`:
`:
`:
`:
`
`
`
`
`
`Applicant.
`-----------------------------------------------------------X
`
`APPLE INC. (“Opposer”), a corporation organized and existing under the laws of
`
`
`
`
`
`
`
`
`
`APPLE PIE REPAIR LLC,
`
`
`
`
`California with a principal place of business at 1 Infinite Loop, Cupertino, California 95014,
`
`believes that it will be damaged by the issuance of a registration in Class 37 for the APPLE PIE
`
`REPAIR mark underlying Application Serial No. 86/403,651, and hereby opposes the same.
`
`
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`1.
`
`Opposer is the world-famous designer, manufacturer, and distributor of a broad
`
`range of goods and services, and Opposer’s APPLE brand is one of the best known brands in the
`
`world. Opposer designs, manufactures, and/or markets in interstate and international commerce,
`
`among many other things, personal computers, mobile communication and media devices,
`
`accessories and applications for use thereon, and services related thereto. Among its broad
`
`product line, Opposer has long offered many goods and services specifically used in connection
`
`with the maintenance, repair, and troubleshooting of computer hardware, computer peripherals,
`
`and consumer electronic devices, including but by no means limited to computer and electronic
`
`
`
`

`
`device repair services offered through Opposer’s Apple Store® retail store services and
`
`Opposer’s AppleCare® service and support programs.
`
`2.
`
`Since at least as early as 1977, Opposer has extensively promoted, marketed,
`
`advertised, distributed, and sold goods and services in connection with a family of trademarks
`
`consisting, in whole or in part, of the word APPLE and a visual equivalent of the word, to wit a
`
`logo depicting a stylized apple with a detached leaf, as shown below:
`
`(the “Apple Logo”).
`
`
`
`3.
`
`Opposer’s family of APPLE-based word marks and its Apple Logo (collectively,
`
`the “Apple Marks”) are distinctive, arbitrary marks that have achieved an extraordinary level of
`
`fame and consumer recognition. As a result of Opposer’s extensive advertising, promotion, and
`
`use of the Apple Marks in connection with a variety of goods and services, the Apple Marks
`
`have acquired enormous goodwill, and have come to be identified immediately with Opposer as
`
`the source of goods and services.
`
`4.
`
`The Apple Marks are famous under the Lanham Act, specifically 15 U.S.C.
`
`§ 1125 et seq., and are among the most valuable trademarks in the world. The extraordinary
`
`level of fame and consumer recognition that the Apple Marks currently enjoy cannot be seriously
`
`disputed.
`
`5.
`
`For many years, Opposer’s APPLE brand (including the Apple Logo) has
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`consistently been recognized as one of the world’s most famous brands. Over the past eight
`
`years, Millward Brown Optimor (“MBO”), a leading market research and brand valuation and
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`2
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`management company, has found APPLE to be one of the top 100 brands in MBO’s “Brandz™
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`Top 100 Most Valuable Global Brands,” an annual assessment of the 100 most valuable brands
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`in the world. In MBO’s 2015 rankings, Opposer’s APPLE brand was again ranked as the
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`world’s most valuable brand, with a value of $246.9 billion. Opposer’s APPLE brand ranked 7th
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`in 2008 rankings, 6th in 2009 rankings, 3rd in 2010 rankings, 2nd in 2014, and 1st in 2011, 2012,
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`2013, and 2015 rankings, clearly demonstrating that the APPLE brand is consistently recognized
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`as one of the world’s most valuable brands for nearly a decade. Attached as Exhibit 1 are copies
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`of relevant pages of MBO’s rankings in reverse chronological order from 2015 through 2008.
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`6.
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`In May 2015, Forbes magazine ranked the APPLE brand as the world’s most
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`valuable brand for the fifth year in a row, with an estimated valuation of $145.3 billion, up 17%
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`over 2014. Attached as Exhibit 2 are printouts of Forbes magazine’s articles regarding its list of
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`the most valuable brands from 2015, 2014, 2013, 2012, and 2011, obtained from its website.
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`7.
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`In 2015, for the fourth consecutive year, Apple won the Harris Interactive “Brand
`
`of the Year” award in the tablet computer category, beating out its competitors. Attached as
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`Exhibit 3 is a printout of the Harris Interactive report obtained from the website at
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`http://www.harrisinteractive.com/Insights/EquiTrendRankings/2015EquiTrendRankings.aspx.
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`8.
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`In addition, Interbrand has consistently recognized Opposer’s APPLE brand as
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`belonging in the top 50 of the world’s most valuable brands, increasing in value each year. In
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`2013, the APPLE brand took the top spot for the first time as the most valuable brand in the
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`world, and continues to hold this number one position for the 2014 rankings. The rise to the
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`number one position came after an increase in Apple’s position in 2012 from 8th (2011) to 2nd
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`(2012), with the biggest growth in estimated brand value in Interbrand’s 2012 rankings: 129%.
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`Previously, the APPLE brand rose nine spots in Interbrand’s rankings—from 17th (2010) to 8th
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`(2011)—and increased in estimated brand value by 58%. Attached as Exhibit 4 are copies of
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`3
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`relevant pages of Interbrand’s “Best Global Brands” rankings, in reverse chronological order
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`from 2014 through 2010. Interbrand has given the APPLE brand the following rankings and
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`U.S. dollar values over the past four years:
`
`i.
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`ii.
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`iii.
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`iv.
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`v.
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`
`9.
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`2014: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $118.9 billion.
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`2013: valuing the APPLE brand as the most valuable brand in the world, with an
`estimated brand worth of U.S. $98.32 billion.
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`2012: valuing the APPLE brand as the 2nd most valuable brand in the world,
`with an estimated brand worth of U.S. $76.568 billion.
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`2011: valuing the APPLE brand as the 8th most valuable brand in the world, with
`an estimated brand worth of U.S. $33.492 billion.
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`2010: valuing the APPLE brand as the 17th most valuable brand in the world,
`with an estimated brand worth of U.S. $21.143 billion.
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`Opposer also has been widely recognized as an extremely valuable, innovative,
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`and admired company. Each year since 2006, Fortune Magazine has published its list of “Most
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`Admired Companies.” Opposer has featured prominently in these rankings each year, and in
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`2015, 2014, 2013, 2012, 2011, 2010, and 2009 was named the “World’s Most Admired
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`Company” for the year. Prior to 2009, Fortune Magazine’s list was limited to “America’s Most
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`Admired Companies,” and Opposer also topped this list in 2008. Attached as Exhibit 5 are true
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`and correct copies of printouts of relevant pages of Fortune Magazine’s “Most Admired
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`Companies” rankings in reverse chronological order from 2015 through 2008.
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`10.
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`Opposer is the owner of numerous United States registrations on the Principal
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`Register for the Apple Marks, including, without limitation, the following registrations:
`
`TRADEMARK
`
`REG.
`NO.
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`APP. DATE/
`REG. DATE
`
`APPLE
`
`1,078,312
`
`March 25,
`1977/
`Nov. 29, 1977
`
`
`4
`
`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`Class 9: Computers and computer
`programs recorded on paper and tape (first
`use: Apr. 1976)
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`GOODS/SERVICES
`(FIRST USE/PRIORITY DATE)
`Class 42: Computer consultation, design,
`testing, research and advisory services;
`research and development of computer
`hardware and software; maintenance and
`repair of computer software
`applications; updating of computer
`software; computer programming
`services; providing information
`concerning computers and computer
`software over computer networks and
`global communication networks; [
`computer services, namely, hosting web
`sites and providing web site operation and
`management services to others; ]
`computer services, namely, providing
`search engines for obtaining data on
`computer networks and global
`communication networks; leasing of
`computers, computer peripherals and
`computer software (first use: Sept.
`1980)
`Class 9: Computer hardware;
`computer hardware, namely, server,
`desktop, laptop and notebook
`computers; computer memory hardware;
`computer disc drives; optical disc drives;
`computer hardware, software and
`computer peripherals for communication
`between multiple computers and between
`computers and local and global computer
`networks; computer networking hardware;
`set top boxes; computer hardware and
`computer software for the reproduction,
`processing and streaming of audio, video
`and multimedia content; computer
`hardware and software for controlling the
`operation of audio a